Principal Financial Services, Inc. v. T YS et al.
Claim Number: FA1407001570598
Complainant: Principal Financial Services, Inc. of Des Moines, Iowa, United States of America.
Complainant Representative: Neal & McDevitt, LLC of Northfield, Illinois, United States of America.
Respondent: T YS of Southington, Connecticut, United States of America.
REGISTRIES and REGISTRARS
Registries: Fox Castle, LLC; Tin Mill, LLC
Registrars: GoDaddy.com, LLC
The undersigned certifies that he or she has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Examiner in this proceeding.
Omar Haydar, as Examiner.
Complainant submitted: July 18, 2014
Commencement: July 21, 2014
Response Date: August 5, 2014
Having reviewed the communications records, the Examiner finds that the National Arbitration Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules").
Complainant requests that the domain names be suspended for the life of the registration.
Clear and convincing evidence.
The Complaint and findings relate to two domains <principal.center> and <principal.services>. There is one Complainant and one or more Respondents, and no domain names were dismissed from this complaint.
The Respondent has registered the domain names <principal.center> and <principal.services>, and is the owner of other domain names including <schoolprincipal.org>.
Complainant, Principal Financial Services, Inc. of Des Moines, Iowa, is the owner of trademark “Principal”, which has been registered in one or more countries.
Complainant has claimed that the domain names in question are identical to their protected word or mark; that the Respondent has no legitimate right or interests to the domain, and that the Respondent has registered the domain names in bad faith, for the purpose of selling them to the Complainant.
Respondent does not dispute the existence or current use of Complainant’s protected mark, and claims they have no interest in infringing upon or violating Complainants rights. Respondent claims the domain name is based on the commonly used, generic term “principal” which has multiple commonly used meanings, and is to be utilized in conjunction with their other domain name <schoolprincipal.org>. Further, the Respondent claims that Complainant has not proven bad faith in the purchase and use of the domain names, and claims the purchase and use of the domain names is a legitimate and fair one. Lastly, Respondent contends that Complaint was brought in an abuse of the URS process or contains material falsehoods.
URS Procedure 1.2.6, requires Complainant to prove, by clear and convincing evidence, each of the following three elements to obtain an order that a domain name should be suspended.
1. The registered domain name(s) is/are identical or confusingly similar to a word or mark for which the Complainant holds a valid national or regional registration and that is in current use.
2. Respondent has no legitimate right or interest to the domain name.
3. The domain name(s) was/were registered and are being used in bad faith.
The Examiner finds that Complainant has proven that the domain names are identical through evidence of the trademark registration. Notwithstanding that Complainant has failed to provide evidence of the current use of the trademark, Examiner finds that the domain names are identical to the protected mark.
The Examiner finds that the evidence fails to prove that Respondent has no legitimate right or interest to the domain names. The Complainant has only offered into evidence the fact that the domains are on a parking page with the registrar. This is insufficient to meet the required standard of clear and convincing evidence, especially considering the limited amount of time between the date of the domain registration and the Complaint. Further, the Respondent has asserted a legitimate right and interest in the usage of the domains in conjunction with the Respondent’s other domain, “schoolprincipal.org”.
The Examiner finds that the evidence fails to prove the domain names were registered and are being used in bad faith. The Complainant has claimed Respondent has purchased the domain names to resell them to the Complainant, but has provided no evidence of such. Further, Respondent has clearly indicated that they had refused to sell or transfer the domains to the Complainant, and notified them that the domain names were not for sale. Although the Complainant has established that the domain names are identical to their protected mark and that Respondent has for the time being, left the domain names parked with the registrar, this by itself does not necessitate a presumption of bad faith on the part of the Respondent. Previous decisions involving claims against domain names based on generic, commonly used terms are consistently denied, protecting the right of domain registrants to retain such domains against trademark owners. These include <hood.com> (FA0408000313566), <cotton.biz> (FA0205000114388), <deluxe.biz> (FA0204000112601), <stage.com> (FA1203001434227), <target.org> (FA0405000267475), <ace.com> (FA0802001143448), <shoppers.com> (FA0802001142605), ), <zero.net> (FA0712001118584), <acquire.com> (FA0604000671532), <tiger.com> (FA0311000214418),<boy.com> (FA0304000154646), <cartoys.net> (FA0002000093682), and <hello.photo> (FA1407001570171) amongst others. In such cases, for the complainant to prevail, there must be some other proof to evidence bad faith, such as actual notice of trademark prior to registration (<ancestry.com> FA1405001560028) or evidence of a pattern of registering domains using protected marks (<despair.net> FA1203001435300). The Examiner also finds guidance for the general right to register domain names based on such generic terms that may be identical or relate to protected marks from the WIPO decision in Zero Int'l Holding v. Beyonet Servs. (WIPO May 12, 2000) which found "Common words and descriptive terms are legitimately subject to registration as domain names on a 'first-come, first-served' basis." Thus, holders of protected marks which are also commonly used, generic terms should ensure prompt registration of their desired domains, as their trademarks, on their own accord, will not suffice to succeed on claims against legitimate registrants of such domain names.
Finally, Examiner finds that the Complainant did not abuse the URS process nor did their Complaint contain material falsehoods. While Complainant’s claims were misleading, omitted material facts, and induced false assumptions, they were not false per se.
After reviewing the parties’ submissions, the Examiner determines that
the Complainant has NOT demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain names be RETURNED to the control of Respondent.
<principal.center><principal.services>
Omar Haydar, Examiner
Dated: August 11, 2014
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